Risk of Forcible Disclosure of IPR Advice: Protect the Client

(IPRinfo 2/2011)

Michael Dowling
Co Chairman of AIPPI’s Q199 Privilege Task Force

Where to on the protection from forcible disclosure of clients’ intellectual property professional advice?

In this Commentary, the views attributed to AIPPI are ones it has already published. The subjective views stated, are those of the author.

The term ’protection’ refers to the present legal devices provided for protecting clients’ IP professional advice from being made public. Those are principally professional secrecy, privilege and confidentiality.

The problems with the protection from forcible disclosure of clients’ intellectual property professional advice are mainly the following two. First, the protection applied in the one country is perceived in another to be inadequate for the protection applicable in that other country to be applied. Secondly, the protection that might have applied overseas is lost either for that reason (inadequacy) or because the IP professionals in the one country are not recognised in another.

Those interested in the protection in Finland may feel remote from the problem of inadequate protection. They may also feel that the potential for the protection to be lost where the advice is transmitted overseas from Finland, is remote. Not so! Every country where IPRs exist has these problems. Further the problems cannot be solved without (at the very least) bilateral agreements.

IP advice travels across borders
There is more potential for legal advice on IPRs to be transmitted overseas than for legal advice on other subjects. This is because the advice is often in effect dealing with the same or similar property owned in one country and the next by the same companies or persons. Differences between the advice which they or their opponents get in the one country and the next about the same subjects, have to be rationalised – so the IP advice often travels across borders in that process.

Where IP advice has been obtained from an overseas lawyer, that has often been accepted as being confidential in another country. But the opposite usually applies when the overseas adviser is a so-called ’non-lawyer’ patent or trade marks attorney.

Only one country has law in place which in effect protects the confidentiality of the advice of such overseas attorneys – New Zealand. One should note that NZ applies that protection without requiring reciprocity overseas for advice given by equivalent NZ attorneys. One appropriate descriptor of NZ’s conduct is ’leadership’!

Same protection for all advisors
AIPPI has proposed in the Standing Committee of Patents (SCP) in WIPO that the protection accepted for clients of lawyers should also apply to clients advised by the attorneys referred to in the previous paragraph.

Some countries have suggested in the SCP that applying the protection to the clients of those IP professionals would be an unwarranted extension of the protection. Further, they suggest that to apply the protection would raise the question – to whom else should the protection be extended? That is, of course, a ’floodgates’ argument – ie where will it all end?

On the issue of ’extension’, AIPPI has pointed out that reality is the other way around. The development of the newer IP specialist lawyer attorneys has happened because they can more efficiently provide specialist legal advice on IP subjects particularly, but not only, in the context of their registering IPRs. In the case of patent attorneys, the added efficiency is founded on combining technical and specialist IP legal qualifications in the one person.

With the encouragement of governments around the world, such attorneys have taken on work which was previously (and is still) done by lawyers. So, the so-called ’non lawyer’ attorneys are in fact specialist IP lawyers whose services substitute for the services which clients previously obtained from generalist lawyers (who are, in many cases, also specialising in IP law). Thus, there is no ’extension’ – it is substitution.

AIPPI has pointed out that the failure to provide the protection for the clients of such attorneys is in effect a reduction in the protection which the clients should have to assist in their obtaining correct advice.

Why should there be a reduction when the needs of the client to have protected communications are not different? The clients have to ’open up’ their minds to their patent or trade marks adviser (and vice versa) in the same way as for lawyers and they rely on (trust) the professional’s ability to advise them in the same way.

Achieving an international agreement is difficult
As to ’floodgates’, once you appreciate that attorneys are qualified to give legal advice, there is no logical basis for the floodgates allegation. Giving the protection to the clients of the newer IP professionals is simply maintaining their status quo in the process of their obtaining legal advice on IPRs. Other categories of professionals that might be involved in the ’floodgates’ argument, are not lawyers.

Since 2004, AIPPI has given priority to co operation with WIPO in trying to solve the problems of the protection. However, Francis Gurry, Director General of WIPO, warned AIPPI as recently October 2010 (at the AIPPI Congress in Paris) that the climate for achieving international agreements through WIPO, is not positive.

One aspect of this gloomy state of affairs may be that the Development Agenda Group (DAG) of countries (Algeria, Brazil, Cuba, Djibouti, Ecuador, Egypt, Guatemala, India, Indonesia, Iran, Malaysia, Pakistan, The Philippines, South Africa, Sri Lanka, Sudan, Uruguay, and Yemen), is not presently supportive of the study of remedies. That exercise is a vital precursor to considering what international agreements would be recommended.

Positive attitude needed for the study of remedies
It is to be hoped for the sake of the SCP that the DAG can be persuaded to be positive on the study of remedies. Opposing such studies is a very bad position for the DAG to adopt as to its own standing, for these reasons.

* The DAG countries have the same needs for good governance that other countries do. They already have the protection. The protection they have (just like any one else) supports full and frank communications between clients and their IP professionals. It exists to help clients obtain correct legal advice, the obtaining of which is in the interests of the administration of justice and the enforcement of national laws.
* AIPPI points out that the DAG’s own manifesto and its guidelines are in fact compatible with such studies being carried out and further, for the making of agreements around subjects which are for the benefit of DAG countries.
* The DAG has quite reasonably raised potential problems. However, AIPPI has shown that each issue raised by the DAG is not in conflict with the development of the protection.
* Thus, if the DAG were in the end to oppose the studies of remedies or the development of the protection based on recommendations obtained in those studies, the DAG will be guilty of dogma. If that occurs it will be a pity. The DAG manifesto and guidelines could have positive outcomes.

The next meeting of the SCP is in May 2011. It is to be hoped that at that meeting, WIPO will be mandated by the SCP to study remedies to the problems of the protection.

The Submissions of The International Association for the Protection of Intellectual property (AIPPI) on Protection of Clients’ Intellectual Property Professional Advice herein called ”the protection” – dealt with by the Standing Committee on Patents (SCP) under the title ’Client Attorney Privilege’ (CAP) – 28 February, 2011